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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, AND MULTI MEDIA, LLC
`Petitioners
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`v.
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`WAG ACQUISITION, LLC
`Patent Owner
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`U.S. Patent Nos. 8,364,839 and 8,122,141
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`_______________________________________
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`Inter Partes Review Case Nos. IPR2017-00784 and -00786
`_______________________________________
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`JOINDER TO INSTITUTED INTER PARTES REVIEWS
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`This is the Opposition by Patent Owner, WAG Acquisition, L.L.C.
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`(“WAG”), to the motion by Friendfinder Networks Inc., Streamray Inc., WMM,
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`LLC, WMM Holdings, LLC, and Multi Media, LLC (collectively, “Petitioners”) to
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`join the instant proceedings with recently instituted IPR proceedings, which are
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`IPR2016-01239 (regarding U.S. Patent No. 8,364,839 (the “’839 Patent”)) and
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`IPR2016-01238 (regarding U.S. Patent No. 8,122,141 (the “’141 Patent”).
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`The IPRs sought to be joined, IPR2016-01238 and IPR2016-01239, were
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`both filed by Webpower, Inc. (“Webpower”), and are referred to herein as the
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`“Webpower IPRs.” Counsel for Webpower in the Webpower IPRs is the same
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`counsel that is representing the present Petitioners. In addition, the Petitioners, by
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`the same counsel, have filed prior IPRs challenging the same WAG patents.
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`Patent Owner opposes Petitioners’ motion for joinder because the instant
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`Petitions and motions are second bites at the apple for Petitioners, and Petitioners
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`have failed to explain why the instant grounds and arguments were not raised in
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`prior (and timely) petitions.
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`Petitioners had their chance and filed IPR petitions against both the ’839 and
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`’141 Patents in 2015, within a year of having been served with complaints alleging
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`infringement of the ’839 and ’141 Patents. The primary reference in both of the
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`Webpower IPRs was known to and asserted by Petitioners in 2015. Petitioners
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`simply chose not to assert the current grounds and arguments at that time. And
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`1
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`Petitioners have given no reason for their failure to make the current arguments
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`years ago.
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`Joinder is discretionary. 35 U.S.C. § 315(c). As indicated in legislative
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`history, the Board determines whether to grant joinder on a case-by-case basis,
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`taking into account each case’s particular facts. See 157 CONG. REC. S1376 (daily
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`ed. Mar. 8, 2011). As the moving party, Petitioners have the burden of proof in
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`establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
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`The Board has exercised its discretion to deny joinder in numerous cases
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`such as this, in which petitioners attempt a second opportunity to pursue arguments
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`that could have and should have been raised in earlier, timely IPRs. See, e.g., LG
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`Elecs., Inc. v. ATI Techs. ULC, Case IPR2015-01620, slip op. at 10 (PTAB Feb. 2,
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`2016) (Paper 10) (denying joinder because petitioner did not demonstrate “a
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`reasoned justification” for its failure to assert current challenges in earlier petition,
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`or present evidence that new references were “not known or available” at the time
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`of the earlier petition). “There is merit in encouraging a petitioner to raise in its
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`first petition all grounds and claims that reasonably could be raised, to avoid serial
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`attacks against a patent and reduce the burden on patent owners of defending
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`multiple proceedings.” Par Pharm., Inc. v. Novartis AG, Case IPR2016-01059, slip
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`op. at 17 (PTAB Oct. 26, 2016) (Paper 19).
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`2
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`Background
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`Petitioners Friendfinder Networks Inc. and Streamray Inc. were served with
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`complaints alleging infringement of the ’839 and ’141 Patents on June 3, 2014.
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`Petitioners WMM, LLC and WMM Holdings, LLC were served with complaints
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`alleging infringement of the ’141 Patent on April 15, 2014, and Petitioner Multi
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`Media, LLC was served with a complaint alleging infringement of the ’141 Patent
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`on April 16, 2014. (Exs. 2001-05.)
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`On April 14, 2015, Petitioners filed petitions for Inter Partes Review of the
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`’839 and ’141 Patents (herein referred to as the “2015 IPRs”).1 The primary
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`reference in IPR2015-01036, which was instituted and in which a final written
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`decision was issued on October 20, 2016, was U.S. Patent No. 5,822,524 to Chen
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`et al. (“Chen”). Chen is the primary reference in both Webpower IPR Petitions that
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`Petitioners seek to join. Further, the Carmel reference used in Webpower’s
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`IPR2016-01238 on the ’141 Patent was also asserted in Ground 4 of Petitioners’
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`2015 IPR on the ’839 Patent. See IPR2015-01036.
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`1 Petitioners WMM, LLC, WMM Holdings, LLC, Multi Media, LLC were not listed as
`petitioners in IPR2015-01036 regarding the ’839 Patent, but were listed as Real Parties in
`Interest. Further, prior Board decisions establish that one petitioner being barred bars all
`petitioners. See, e.g., Ubisoft, Inc. v. Uniloc USA, Inc., Case IPR2016-00414, slip op. at 5-6
`(PTAB June 2, 2016) (Paper 16) (denying joinder, in part, because some of the petitioners had
`previously filed a petition); see also Terremark North America LLC v. Joao Control &
`Monitoring Systems, LLC, Case IPR2015-01482, slip op. at 5, 14-15 (PTAB Dec. 28, 2015)
`(Paper 10) (tying petitioners together because barred petitioner had “substantial control over the
`case by participating in filing the Petition, appointing counsel, etc.” and setting bar date for
`petition to earliest date of service on one petitioner).
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`3
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`Argument
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`Petitioners have failed to sufficiently explain in the present Petitions why
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`their petitions in the 2015 IPRs did not contain the grounds and arguments set forth
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`in the Webpower IPRs.
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`The Webpower IPRs raise a couple of new secondary references, but
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`Petitioners have given no reasoning as to why these new secondary references are
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`not cumulative of prior references and, if not cumulative, why the references could
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`not have been found using reasonable efforts for use in the 2015 IPR petitions.
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`Rather, Petitioners held back grounds and arguments as to known prior art in
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`their 2015 IPRs, which Petitioners now seek to assert almost two years later in a
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`second bite at the apple. The Board has previously denied joinder in many similar
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`cases. See, LG Elecs., Inc. v. ATI Techs. ULC, Case IPR2015-01620, slip op. at 10
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`(PTAB Feb. 2, 2016) (Paper 10) (denying joinder); Samsung Elec. Co., Ltd. v.
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`Affinity Labs of Texas, LLC, Case IPR2015-00820, slip op. at 4-5 (PTAB May 15,
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`2015) (Paper 12) (denying joinder because the petitioner offered no persuasive
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`reason why the asserted grounds of unpatentability could not have been raised in
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`earlier filed petitions); Reloaded Games, Inc. v. Parallel Networks, LLC, Case
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`IPR2014-00950, slip op. at 4-5 (PTAB Oct. 22, 2014) (Paper 12) (denying joinder
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`as “second bite of the apple” because petitioner could have raised grounds of
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`unpatentability in prior petition); Apotech, Inc. v. Synopsys, Inc., Case IPR2015-
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`4
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`00760, slip op. at 7-9 (PTAB July. 21, 2015) (Paper 14) (denying joinder as second
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`bite where the petition “simply presents arguments that reasonably could have been
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`made [in the prior petition], but were not.”); see also Toyota Motor Corp. v. Am.
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`Vehicular Sciences LLC, Case IPR2015-00262, slip op. at 6 (PTAB Jan. 29, 2015)
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`(Paper 10) (denying joinder in part because petitioner could have presented the
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`new grounds and arguments in its earlier petition and did not sufficiently explain
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`why it failed to do so); Ubisoft, Inc. v. Uniloc USA, Inc., Case IPR2016-00414, slip
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`op. at 5-6 (PTAB June 2, 2016) (Paper 16) (denying joinder in part because some
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`of the petitioners had previously filed an IPR petition regarding the patent in
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`question that did not include the asserted grounds, and did not sufficiently explain
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`the failure to do so).
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`It is clear that the primary reference asserted in the Webpower IPRs was
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`well-known to Petitioners years ago, and Petitioners have not even attempted to
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`justify their delay in making the current arguments.
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`Petitioners’ IPR2017-00784, regarding the ’839 Patent, is especially
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`concerning. Grounds 5 and 6, which were instituted in Webpower’s underlying
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`IPR2016-01239, concern claims 5, 12, and 19 of the ’839 Patent. These claims
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`were not instituted in the 2015 IPR, IPR2015-01036. Petitioners here are using the
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`Board’s prior decision as a roadmap to refine their arguments. “[P]articularly
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`where [the Board’s] Decision to Institute has been used as a roadmap to remedy
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`5
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`deficiencies in an earlier petition, [the Board] exercised [its] discretion under 35
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`U.S.C. § 315(c) and declined to grant joinder.” LG Elecs., Inc. v. ATI Techs. ULC,
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`Case IPR2015-01620, slip op. at 7-8 (PTAB Feb. 2, 2016) (Paper 10) (citing
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`cases). “A decision to institute review on some claims should not act as an entry
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`ticket, and a how-to guide . . . to challenge those claims which [the petitioner]
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`unsuccessfully challenged in the first petition.” ZTE Corp. et al. v. ContentGaurd
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`Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper
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`12). Petitioners here are using the Board’s prior decision on the ’839 Patent as a
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`guide to the current Petitions. The Board should exercise its discretion here to deny
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`Petitioners from doing so.
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`Conclusion
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`deny the Motions for Joinder and that the Petitions be dismissed as time-barred.
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` Dated: February 20, 2017
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`Respectfully submitted,
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`
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-822-0163
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on February 20,
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`2017, a complete and entire copy of this Patent Owner Opposition to Petitioners’
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`Motion for Joinder to Instituted Inter Partes Review was provided to the
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`Petitioners via email to FMGasparo@Venable.com and TJAga@Venable.com, as
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`authorized in Petitioners’ mandatory notices, and that on February 21, 2017, once
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`Patent Owner’s Mandatory Notices were approved, a complete and entire copy of
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`this Patent Owner Opposition to Petitioners’ Motion for Joinder to Instituted Inter
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`Partes Review was provided to the Petitioners by filing through the PTAB E2E
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`System.
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`Dated: February 21, 2017
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`
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